WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Tata Sons Ltd. v. The Advanced Information Technology Asssociation

Case No. D2000-0049

 

1. The Parties

1.1 Tata Sons Ltd, Bombay House, 24, Homi Modi Street, Mumbai 400 024, India (Complainant).

1.2 The Advanced Information Technology Association, 1/182, Haji Habib Building, Dr.B.A.Road, Dadar, Mumbai 400 014, India (Respondent).

 

2. The Domain Name and Registrar

2.1 The Respondent is the registrant of the following domain name: <tata.org>, registered with Network Solutions, Inc. (NSI).

 

3. Procedural History

3.1 The Complaint in this case was filed by e-mail on February 9, 2000 and in hardcopy on February 22, 2000 with the WIPO Arbitration and Mediation Center.

3.2 The Center has found that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

3.3 On February 11, 2000, the Center transmitted a request to NSI to verify the following facts:

3.3.1 To confirm that a copy of the Complaint was sent to NSI by the Complainant,

3.3.2 To confirm that <tata.org> is registered with NSI,

3.3.3 To confirm that the entity identified in the present case as the Respondent is the current registrant of the domain name,

3.3.4 To provide full contact details that are available in NSI's database for the domain name registrant, technical contact, administrative contact and billing contact, for the said domain name,

3.3.5 To confirm that the Uniform Domain Name Dispute Resolution Policy is in effect in respect of the registered domain name,

3.3.6 To indicate the current status of the domain name.

3.4 Vide communication dated February 14, 2000, NSI informed the Center as under:

3.4.1 That NSI is the Registrar of the domain name registration,

3.4.2 That M/s.Advanced Technology Association is the current registrant of the <tata.org> domain name registration,

3.4.3 That the Registrant is:

TATA4-DOM
1/162 Haji Habib Bldg.,
Dr.B.A.Road
Dadar, Mumbai, Maha 400 014
India

Administrative Contact:
Jain, Pravin (PJ935)
[Contact details omitted]

Technical Contact, Zone Contact:
Sharma, Sanjay (SS1398)
[Contact details omitted]

Billing Contact:
Jain, Pravin (PJ935)
[Contact details omitted]

3.4.4 NSI's 4-0 Service Agreement is in effect

3.4.5 The domain name registration <tata.org> is on "Hold" status.

3.5 On February 23, 2000 the Respondent was notified of the Complaint filed by the Complainant and opportunity was granted as per the Rules for filing of a Response. This was done by e-mail, facsimile as also by courier service. The Administrative Panel finds thathe WIPO Center has satisfied its notification obligations under Rule 2(b).

3.6 No Response was received from the respondent. One e-mail was received from the person shown above as "Technical Contact", viz., Mr.Sanjay Sharma which reads as under:

"This is put on record that the domain is not owned by me as I am only the technical contact for the same. It is owned by Pravin Jain . Please review the NIC code and it clearly states that the Administrative Contact is the sole owner of the domain. Please refrain from sending any such letters or e-mails to me as I am not in any way or form associated with the domain and its purpose."

3.7 The Center did not receive any response from the Respondent. In view of this, the Center, on March 19, 2000 notified the Respondent of its default and further informed the Respondent that the Administrative Panel would be appointed as per the Rules.

3.8 On March 23, 2000 the Center appointed an Administrative Panel consisting of a single member viz., Maninder Singh and this was notified to the Complainant and the Respondent. The deadline for the decision of the Administrative Panel was fixed as April 6, 2000.

3.9 The language of the administrative proceeding is English.

3.10 Till this date, no response has been received from the Respondent. The Panel therefore rules that the Respondent has forfeited its right to file a Response. The Respondent is proceeded ex-parte. Rule 5(e) which governs such circumstances reads as under:

"(e) If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."

3.11 The Panel finds that in the present case there are no exceptional circumstances that exist and therefore the present dispute shall be decided on the basis of the Complaint itself.

 

4. Factual Background

4.1 The Complainant is an Indian company existing under Indian laws. It is the principal investment holding company of the Tata Group of Companies whose turnover is more than US$9 Billion.

4.2 The word "TATA" is the trade mark, corporate name, house mark of the complainant and its Group companies.

4.3 "TATA" is a rare Indian surname and was the surname of the founder of the Complainant which was established in the year 1917.

4.4 The Complainant and its Group companies have interests in a diverse field of activities including Automobiles, Energy, Chemicals & Pharmaceuticals, Consumer Products, Publishing, Metal, Information Technology & Communications, Finance etc.,

4.5 The Complainant is the registered proprietor of the trade mark TATA in India. The earliest registration dates back to the year 1942. It is also registered in other countries viz., Bangladesh, Brunei, Kuwait, Malaya, Nepal, Sabah, Sarawak, Singapore and Pakistan.

4.6 The Respondent is the registrant of the domain name <tata.org> with NSI.

 

5. Parties Contentions

5.1 The Complainant's contentions in brief are as under:

5.1.1 That the complainant is the exclusive owner of the mark/name TATA;

5.1.2 That the respondent has got the domain name "tata.org" registered in its name but has not got the web site activated till date and therefore the intentions of the Respondent are mala fide;

5.1.3 That if anyone proceeds to operate a website under the impugned domain name, the same would result in confusion and users are likely to assume some nexus, affiliation or endorsement by the Complainant with such a website;

5.1.4 That the Respondent has registered the impugned domain name for an illegal benefit and the same constitutes misappropriation;

5.1.5 That Internet Users are likely to subscribe to the services of the impugned website or to deal with the Respondent under the belief that it is an authorised website of the complainant.

5.16 The Respondent has failed to submit its Response in the present case.

 

6. Discussion and Findings

6.1 From a reading of the complaint and the documents filed with it, it is abundantly clear that the name/mark TATA is a "well-known" mark.

6.2 This is further established from various orders passed by courts in India that have granted protection to the mark TATA.

6.3 The mark/name TATA is synonymous with quality products and the same signifies a sense of reliability. Consumers from all classes of society consisting of urban, rural, semi-urban etc., are familiar with the TATA mark/name. The word TATA apart from being a rare surname has no obvious meaning and is entitled to a very high degree of protection.

6.4 The founder of the TATA GROUP, popularly known as Mr. Jamsetji Tata, is a world famous industrialist. In fact one British author, while referring to this name says:

"the name of one Parsi (a community) in particular has for many years been famous from London to New York and Tokyo. That name is TATA." 1

6.5 The Respondent belongs to the same city as the Complainant. The Respondent is obviously aware of the long-standing, enormous reputation of the name TATA and has adopted an identical domain name. The Respondent has offered no explanation as to how it adopted the word TATA as a domain name. The adoption of the domain name, as is evident from the WHOIS Database filed with the complaint clearly reveals that the domain name was registered approximately 3 years ago but the same has not been activated till date. This is proof that the Respondent is merely "hoarding" the said domain name. Even if a website under the said domain name had been activated, in the present facts and circumstances, it would still constitute dishonest adoption and misappropriation.

6.6 Moreover, the Complainant has successfully obtained orders from Courts in India in relation to domain names wherein Courts have granted orders of injunction against the defendants therein from using the domain names <tatagroup.com>, <bodacious-tatas.com>, <jrdtata.com>, <ratantata.com>, <tatahoneywell.com>, <tatateleservices.com>, <tatahydro.com>, <tatawestside.com>, <tatatimken.com>. Though these disputes are still pending, they are prima facie evidence of the recognition of the Complainant's rights in the TATA name/mark.

6.7 The Complainant has pleaded in its complaint as under:

• That potential customers would be induced to subscribe to the services of the impugned web site or to deal in some matter with the Respondent/3rd party believing them to be licensed or authorised by the Complainant;

• That potential customers would be induced to believe that the Respondent/3rd party have some connection with the Complainant in terms of a direct nexus or affiliation with the Tata Group of Companies;

• That potential customers would be induced to believe that the Respondent/3rd party is carrying on activities that have been endorsed by the Complainant and services that are sought to be offered by the respondents have the same level of quality and reliability that is synonymous with the goods and services of the Complainant companies.

6.8 The above circumstances, though not specifically pleaded, constitute "Use in Bad Faith" as contemplated under Clause 4(b)(iv) of the Uniform Dispute Resolution Policy.

6.9 In view of all the above mentioned facts and circumstances, it is found:

6.9.1 That the Respondent's domain name <tata.org> is identical to the trade mark TATA in which the Complainant has rights;

6.9.2 That the Respondent has no legitimate interest in the domain name <tata.org>;

6.9.3 That the registration of the domain name "tata.org" is a "Bad Faith registration"

 

7. Decision.

7.1 The Panel decides that the Respondent's domain name "tata-org" should be transferred to the Complainant.

 


 

Maninder Singh
Panelist

Dated: April 4, 2000


Footnotes:

1. "100 Great Modern Lives" published for Odham Books by The Hamlyn Publishing Group Limited, edited by John Canning